The registration of a trade mark gives the owner of that trade mark a monopoly in the use of the mark for specified and similar goods. This monopoly allows the owner to object to the use of the mark by a competitor. The registration of the traditional type of trade mark, such as a word mark or a logo, is not usually a problem for competitors. There are many different words or logos that can be used and it is inconceivable that words or logos will run out. What is more of a problem is the registration of a colour.
In the case of Societe des Produits Nestle S.A v. Cadbury UK Ltd, Cadbury sought registration for ‘the colour purple (Pantone 2685C)’. The registration was for a number of different chocolate products.
The Trade Mark Registry allowed registration of the mark for the majority of goods listed. The examiner found that there was no inherent distinctive character in the mark but there was a large amount of evidence suggesting that the mark had acquired distinctiveness. In particular it was noted that Cadbury had been using the colour purple since 1914.
On appeal to the High Court Nestle did not attack the examiner’s findings on acquired distinctiveness. Instead it suggested that the mark proposed by Cadbury was incapable of registration as it did not meet the definition of a sign.
This is an issue that has been the subject of several Court of Justice of the European Union (CJEU) decisions. The case of Libertel was the first case to expressly acknowledge that a colour could be registered as a trademark provided that the colour is described and accompanied with a pantone reference. Such a reference allows the mark to be identified clearly which is a requirement of a sign capable of graphic representation and therefore registration. This alone is not enough and a Court must consider the context of the case in order to make a decision on registration.
Nestle cited the later CJEU case of Dyson which held that the abstract concept of a transparent bin for a vacuum cleaner was not capable of registration. They argued that this should be extended to abstract colours so as to prevent an unfair competitive advantage being achieved by Cadbury. In the High Court Judge Briss QC looked at the decisions of the CJEU and decided the case in favour of Cadbury. In his opinion the decision in Libertel was clear.
The test suggested in Libertel and used in this case is that a Court should examine the context of the case in order to prevent an abuse of trademark law. This will include consideration of the limited availability of colours. To find in favour of the applicant a Court will look at how the public perceives the mark. If it is widely associated with the applicant then the Court is likely to be slow to refuse registration.
This case is not a true reflection on the attitude of the Courts to the registration of colour marks. Cadbury have clearly been using the colour for a long time and consumers certainly associate purple with Cadbury’s chocolate. It remains to be seen if the registration of colour marks will be reserved for large, and well known, companies such as Cadbury or if a smaller business can satisfy the high threshold.
One last interesting point is the acknowledgement by Judge Briss of the effect of the IP Translator case. The decision by the CJEU in IP Translator has had an effect on the specification of goods in trade mark applications. It is now essential that a trade mark application contains a specific list of goods. This list must enable a third party or the authorities to determine accurately the scope of protection of the trade mark. The case is a reminder that parties applying for a trade mark should be very clear as to the goods they wish to have the mark registered against.